ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Mystery Shoppers, Inc., headquartered in San Diego, California. Respondent is Southwest Mystery Shoppers, Inc., located in El Paso, Texas. The contested domain name is mysteryshoppers.com
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on September 14, 2000. The hardcopy of the Complaint Form was received on September 15, 2000. Payment was received on September 15, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on September 15, 2000. The requested information was received September 19, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on September 19, 2000. That date is the commencement date of the administrative proceeding.
On September 19, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On September 29, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on October 2, 2000.
On October 20, 2000, the Clerk's Office contacted Ms. Sarah Cole, and requested that she acts as panelist in this case.
On October 20, 2000, Ms. Sarah Cole, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 24, 2000, the Clerk's Office forwarded a user name and a password to Ms. Sarah Cole, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 24, 2000, the parties were notified that Ms. Sarah Cole had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 6, 2000.
3. Factual Background
Complainant, Mystery Shoppers, Inc., provides information about mystery shopping services to a variety of retailers in the United States. Mystery shoppers shop in stores, restaurants and hotels, among other places, and provide information about customer service to the entities in which they shop. Complainant registered its service mark, "mystery shoppers," on December 3, 1991. The service mark was cancelled on June 8, 1998. A search of the United States Patent and Trademark database reveals that Complainant applied for a new service mark based on its mystery shopping services on September 29, 1999.
Respondent, Southwest Mystery, Inc., is also in the business of providing mystery shopping services to a variety of companies throughout the country. It maintains a web-site offering mystery shopping services at mysteryshoppers.com. A search of the United States Patent and Trademark database reveals that Respondent applied for a new service mark based on its mystery shopping services in the year 2000.
4. Parties' Contentions
Complainant contends that Respondent's web site, mysteryshoppers.com, is identical to its service mark, "Mystery Shoppers, Inc.". It does not, however contend either that the domain name is being used illegitimately or in bad faith.
Respondent contends that its domain name is not identical or confusingly similar to Complainant's service mark. Moreover, Respondent contends that Complainant's claim of similarity is illegitimate because Complainant's service mark was cancelled on June 8, 1998. Respondent further contends that even if Complainant's mark is valid, Complainant nevertheless should lose because it has failed to establish either that Respondent has utilized its domain name illegitimately or in bad faith. Finally, Respondent contends that Complainant, by relying on a cancelled service mark to support its complaint, is acting in bad faith in an attempt to hijack Respondent's domain name and cause harm to Respondent.
5. Discussion and Findings
According to section 4(a) of the Uniform Dispute Resolution Policy (UDRP), in order to prevail, a Complainant must prove that :
(i) [the challenged] domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) [the Respondent has] no rights or legitimate interests in the domain name ; and
(iii) [the] domain name has been registered and is being used in bad faith.
Here, Complainant fails to meet its burden of proof. Although Complainant alleges that the challenged domain name is identical to its service mark, it fails to allege either that Respondent lacks a legitimate interest in the domain name or that Respondent registered the domain name in bad faith. Indeed, with respect to these latter two elements, the Complainant states simply that it "[does] not think the domain name is being used illegitamtly [sic]," and it "[does] not think the domain name is being used in bad faith." In light of Complainant's allegations, the Panel need not reach the question of whether the domain name and service mark are identical or confusingly similar. Such a finding is unnecessary since the Panel must inevitably conclude that Complainant has failed to meet its burden of proof on two of the three essential elements of its prima facie case by failing to allege either bad faith or illegitimacy.
For the reasons set forth above, the panel finds in favor of the Respondent and rejects the Complaint.
October 30, 2000, Columbus, Ohio, USA
(s) Sarah Rudolph Cole